EFFECTIVE USE OF ITC SECTION 337 TO RESOLVE PATENT DISPUTES

CD: What trends in connection with ITC Section 337 investigations have you seen developing over the last 12 months? Could you highlight any notable outcomes from recent cases?

Mastriani: The two most notable developments in the last year relate to the ITC’s domestic industry analysis under 19 U.S.C. §1337(a)(3)(C). First, the Federal Circuit recently reversed the Commission’s longstanding precedent that licensing investments need not relate to articles protected by the asserted patents. Commonly called the ‘technical prong’, the ITC had consistently held there was no such requirement for licensing-based domestic industries. Following reversal, the ITC recognised the only plausible interpretation of the opinion is that there is an ‘articles’ requirement for licensing-based domestic industries. Second, the Commission has tightened its requirements for R&D and engineering-based domestic industries. In particular, the Commission requires that activities and investments be related to the patented technology rather than the article as a whole. Both of these developments will have a substantial impact on the landscape of subparagraph (c) domestic industries in future investigations. The ITC is also in the midst of deciding two critical issues, the outcomes of which remain to be seen. The first is whether it can hear cases based on importation via a digital transmission. The second is whether it can hear claims of induced infringement when elements necessary for direct infringement are conducted domestically after importation.